A new trademark regulation entered into force in Albania on June 7, 2018, clarifying a range of issues raised by the changes to the Albanian Industrial Property Law in force as of March 24, 2017. Some of the most significant changes and clarifications concern the following:
Clear Definitions and Representation Requirements
While the Albanian IP law defines a trademark in general terms, the new regulation more clearly defines different types of trademarks as well as representation requirements for the most common traditional and non-traditional trademarks. It provides definitions for word, figurative, position, pattern, color and shape marks that are in line with the Implementing Regulation (EU) 2018/626 of March 5, 2018.
Having clear rules on trademark representation enables applicants to clearly demonstrate the nature and features of their marks, which allows for proper examination and, at a later stage, adequate determination of the nature and scope of protection, especially in enforcement proceedings.
Literal Interpretation of Class Headings
The regulation adopts the literal approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations. Namely, Article 13(2) of the regulation states that general terms, including class headings of the Nice Classification, are to be interpreted as including only the goods and services covered by the literal meaning of these terms.
This provision aligns Albanian legislation with that of the EU. Following the Court of Justice of the EU’s June 19, 2012 decision in the IP Translator ‘class headings’ case (C-307/10 – Chartered Institute of Patent Attorneys v Registrar of Trade Marks), national IPOs in the EU moved away from the “class heading covers all” to the “means what it says” approach.
In the absence of a previous provision that provided otherwise, it is likely the Albanian authorities will apply this provision to both new and existing registrations. However, holders of existing registrations have so far been allowed to specify the list of goods and services intended to be covered when filing a renewal application, if they haven’t done it in their trademark application. Therefore, applicants and holders of existing registrations are advised to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class or only for the specific goods or services mentioned in the class heading, at the time of registration or renewal.
The regulation also introduces an interesting provision regarding the comparison of goods, namely Article 13(6) specifies that, when comparing goods/services, those covered by the same class should not necessarily be deemed similar, and those belonging to different classes should not necessarily be considered dissimilar. This is an improvement and a departure from previous practice, when the Albanian IPO often deemed goods or services similar or dissimilar solely based on their class.
Article 22(8) of the regulation provides a definition of identical signs which does not limit the term to its literal meaning: “signs should be considered identical where, when viewed as a whole, they are not differentiated, or contain insignificant differences.” It seems that, when drafting this provision, the IPO took into account the definition from the decision in the Arthur et Félicie case (C-291/00 – LTJ Diffusion SA v Sadas Vertbaudet SA).
Further, according to the regulation, the IPO can refuse a trademark ex-officio if there is an earlier identical registered trademark. It is in line with the existing practice of the IPO. However, Article 143(2)(a) of the Albanian IP law provides for oppositions based on identity, rather than leaving the issue to the discretionary power of the IPO.
Unlike the law, the regulation also provides that the IPO can intervene ex-officio even when the goods designated by the identical marks are similar or related to each other. The regulation therefore significantly expands the definition of the identical mark, broadening the category of trademarks the IPO will be able to intervene in ex-officio. This may make the IPO decisions vulnerable to cancellation and create an unsteady practice.
“Restitutio in Integrum” Procedure
The regulation clarifies the “restitutio in integrum” procedure, which was introduced for trademarks, industrial designs and geographical indications following the IP law amendments in March of last year, while it has existed for patents since 2014.
Namely, an applicant who, for justified reasons and despite due diligence, failed to perform a certain action by a certain deadline, may request “restitutio in integrum” if this failure resulted in the loss of rights. This request must be filed within 60 days from the removal of the cause for non-compliance and no later than one year after the expiration of the missed deadline and is subject to the payment of a fee.
The IPO then examines the request within a month, and if the request is accepted, the IPO informes the applicant about the time period within which they should remedy the situation. If the request is refused, the applicant may oppose the decision before the IPO’s Appeal Board within a month after receiving the written notification.
“Restitutio in integrum” does not apply to opposition and cancellation proceedings held before the Examination Division, to appeals against decisions in these proceedings filed before the Appeal Board, or to “restitutio in integrum” requests.
Criteria for Determining Well-Known Marks
Article 58(1) of the regulation specifies that, when determining whether a mark is well-known, the Albanian authorities should take into account the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by WIPO in September 1999. Although Albanian authorities have already followed the Joint Recommendation in practice, having it specified as binding by the regulation will contribute to establishing steady practice.
However, the regulation failed to determine the procedure for establishing well-known status. It remains unclear whether it should be established in a separate procedure, or along with other claims, in court, or before the IPO.
Enforcement Procedures Held Before the IPO
Further to the March 2017 IP law amendments, the regulation establishes procedural rules for oppositions and cancellation actions held before the IPO. Under the amended IP law, the IPO will not only examine oppositions and appeals against refusals on absolute grounds, but will also handle other actions, including cancellation, invalidation and non-use actions and claims based on well-known status. The amended law also established two instances in the IPO, the first being the Examination Division and the second being the Appeal Board.
The regulation provides more time for the opponent and the applicant to respectively complete the file and respond to an opposition. It is now two months following the IPO’s notification, while the previous regulation provided a shorter, one-month deadline.
While deadlines for enforcement cases cannot be extended or reinstated, the regulation enables claimants to act quickly. Namely, claimants can file a formal action by completing the standard form and paying the fee within the stipulated deadline, while they can file supporting documents and arguments within two months after receiving an invitation from the IPO to complete the file.
This possibility only exists in proceedings before the first instance of the IPO. In case of an appeal against the first instance decision before the IPO Appeal Board, the appellant should file arguments and supporting documents within a month of being notified of the first instance decision.
The clarification of these procedural rules is expected to release the backlog of oppositions, cancellations, and appeals caused by the IPO’s stagnation after the IP law changes entered into force in March 2017.
Official Fee Modifications
The regulation was accompanied by the introduction of official fees for the newly established IPO procedures and the increase in certain existing official fees, by an average of 10 percent. Like the regulation, the new official fees took effect on June 7, 2018.
While the new fees are applicable to applications filed as of June 7, 2018, the situation remains somewhat unclear regarding the official fees for the newly established procedures, many of which have been brought before the IPO since March 2017, but either no fee or an estimated fee was paid for them, which now may not correspond to the recently established fees. The IPO may now demand retroactive payments of such fees.